Complainant
was registrant of five US trademarks, WHEAT THINS, WHEATSWORTH, HARVEST
CRISPS, MILK-BONE, and BETTERCHEDDARS. Respondent registered the
domain names, wheatthins.com, wheatsworth.com, bettercheddars.com, harvestcrisps.com,
and milk-bone.com. Complainant alleged that its registered marks
and the registered domain names were identical and that Respondent registered
and used those names in bad faith.

Held,
Name Transferred to Complainant

Complainant
must prove that the domain name is identical or confusingly similar to
the corresponding trademark; that Respondent has no legitimate rights or
interests with respect to the domain name; and that the domain name has
been registered and used in bad faith by Respondent.

On its face,
each domain name in issue is for purposes of this dispute identical to
the corresponding Nabisco trademark.

Respondent
displayed a studied selection of domain names for the purpose of profiting
from activities other than maintaining other active websites for providing
goods and services in commerce. Respondents conduct in acquiring
such domain names suggests strongly that it intended and continues to intend
to profit from sales of its rights in those domain names. Respondents
willingness to sell three domain names at a low price suggests no legitimate
interest in using any of the domain names to provide goods and services
in commerce. Thus, Respondent had no legitimate interests in the
domain names.

Respondents
real business is to acquire domain names and sell them for profit.
Its policy and practice are to trade on the value of the marks it has registered
as domain names by way of selling the domain names to the owners of the
marks or by otherwise interfering with the owners rights to use their
marks in commerce shows bad faith use.

2. Domain
Name and RegistrarThe domain
names in issue are "wheatthins.com", "wheatsworth.com", "bettercheddars.com",
"harvestcrisps.com", and "milk-bone.com". The registrar is Network Solutions,
Inc.

3. Procedural
HistoryThe WIPO Arbitration
and Mediation Center (the Center) received Nabiscos complaint on February
3, 2000 (electronic version and hard copy). The Center verified that the
complaint satisfies the formal requirements of the ICANN Uniform Domain
Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain
Name Dispute Resolution Policy (the Rules), and the Supplemental Rules
for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
Nabisco made the required payment to the Center. The formal date of the
commencement of this administrative proceeding is February 7, 2000.The complaint
identifies Patron Group, 2300 Buchanan Street, #3, San Francisco, California
94115, U.S.A., as Respondent, identifies Johan Swildens as the Administrative
Contact and the Billing Contact, and states that pre-complaint dealings
with respondent were addressed to:Johan SwildensThe Patron
Group2300 Buchanan
Street, #3San Francisco,
California 94115,email: <hans@swildens.com>.On February
4, 2000, the Center transmitted via email to Network Solutions a request
for registrar verification in connection with this case. On February 4,
2000, Network Solutions transmitted via email to the Center Network Solutions
Verification Response, confirming that the registrant is Patron Group and
both the administrative and billing contacts are Johan Swildens, and stating:"The domain
name registrations WHEATTHINS.COM, WHEATSWORTH.COM, BETTERCHEDDARS.COM,
HARVESTCRISPS.COM and MILK-BONE.COM are in Active status."On February
7, 2000, the Center transmitted via email to "johan@swildens.com"and "hans@swildens.
com", among others, Notification of Complaint and Commencement of the Administrative
Proceeding, together with a copy of the Complaint. The Center advised that
the response was due by February 26, 2000.On the same
day, the Center transmitted via facsimile copies of the foregoing documents
to Mr. Johan Swildens at Patron, fax number 1 415 346 7696. Also, on the
same day, the Center transmitted via "Post/Courier" copies of the foregoing
documents to:The Patron
Group(Mr. Johan
Swildens)2300 Buchanan
Street, Apt. #3San Francisco,
CA 94115United States
of America.On February
8, 2000, Patron submitted via facsimile to the Center Patrons response,
dated February 8, 2000 and signed by Hans Swildens as President. Patrons
response identifies The Patron Group, Inc., 2063 Larkin Street, San Francisco,
CA 04109, as respondent and Hans Swildens, President, as Patrons representative
and the person to whom communications should be sent. Patron agreed (paragraph
4) "to have the dispute decided by one member of the approved list of panelists."On February
11, 2000, the Center advised the parties via fax that Mr. David Plant had
been appointed as the panelist in this proceeding and enclosed a copy of
the panelists Statement of Acceptance and Declaration of Impartiality
and Independence.

4. Factual
Background; Parties Contentionsa. The TrademarksThe complaint
is based on five trademarks, registered in the U.S. Patent and Trademark
Office pursuant to six registrations, copies of which appear at Annex A
to the complaint, viz.:WHEAT THINS
Reg. No. 1,022,799 October 14, 1975WHEATSWORTH
Reg. No. 93,417 September 16, 1913BETTER CHEDDARS
Reg. No. 1,319,653 February 12, 1985HARVEST CR
ISPS Reg. No. 1,584,989 February 27, 1990MILK-BONE
Reg. No. 72,501 January 26, 1909MILK-BONE
Reg. No. 218,468 September 28, 1926.

b. The ComplaintThe complaint
alleges (paragraph 8) that each trademark is currently in use. Specifically,
the complaint avers (paragraphs 8 and 9(B)) dates of use, goods, and annual
wholesale sales as follows:WHEAT THINS
since 1947 crackers >US$160 millionWHEATSWORTH
since 1913 crackers >US$9 millionBETTER CHEDDARS
since 1983 crackers >US$28 millionHARVEST CR
ISPS since 1989 crackers >US$15 millionMILK-BONE
since 1908 animal/dog >US$100 millionbiscuitsThe grounds
for the complaint are:Paragraph
9 (A) -- The domain names in issue are virtually identical to the corresponding
registered trademarks.Paragraph
9 (B) -- The trademarks have no meaning or significance other than as trademarks
identifying Nabiscos products and distinguishing them from those of competitors.
As a consequence of product quality and consumer acceptance, Nabiscos
trademarks have acquired substantial goodwill belonging exclusively to
Nabisco. Patron has no active website under any of the domain names in
issue.In light of
the foregoing, Patron has no legitimate interest in the domain names.Paragraph
9 (C) -- The domain names in issue have been registered and used in bad
faith because:(i) The circumstances
indicate that Patron registered the domain names primarily for the purpose
of selling the domain name registrations to Nabisco, for valuable consideration
in excess of the documented out-of-pocket costs directly related to the
domain name. In an email dated August 02, 1999 (Annex B to the complaint),
apparently in connection with a letter Mrs. Gallagher of Nabisco had sent
to Patron, Hans Swildens offered to sell to Nabisco "three of the domain
names which are the subject of this complaint" for $6900, "far in excess"
of Patrons "out-of-pocket costs related to the domain name[s]." $6900
includes costs "not related to acquiring or maintaining the registration
[sic] and/or are not-of-pocket costs... ." Patron admits that "the suggested
price of $6900 would allow him [sic] to make a profit."(ii) Patrons
conduct in registering well-known trademarks of others supports the inference
that Patron registered the domain name in issue to prevent Nabisco from
"reflecting the marks in corresponding domain names." Patron owns at least
53 domain names identical or virtually identical to registered U.S. trademarks
of other companies, such as Nestle, General Mills, Nabisco, AT&T, Pfizer,
Proctor & Gamble, and Warner-Lambert. These domain names are listed
in Annex C to the complaint.In its complaint,
Nabisco requests that the ownership of the domain name in issue be transferred
to Nabisco.c. The ResponseIn its February
8, 2000 response to the complaint, Patron avers the following:Paragraph
7 re Ground (A) -- The domain names in issue are "not identical" to Nabiscos
"corresponding trademarks, as confirmed by Nabisco. Furthermore, "they
are not famous names."Paragraph
7 re Ground (B) --"Most" of Nabiscos trademarks "have meaning outside
of their trademarks. For example, Bettercheddars.com could represent a
website for a large cheese or cheddar producing firm in Wisconsin."Patron states
further:"If the arbitrator
feels that some of the above names are in true conflict to Ground (B),
the respondent is willing to sell back the domain names to the complainant
at the cost paid."Patron repeats
that it "feels that most of the domain names above have meaning outside
of the complainants description above."Paragraph
7 re Ground (C)(i) -- Patron avers:"The respondent
was solicited and asked to sell some of the domain names in question. The
respondent set a price for selling some of the domain names back to the
complainant to cover out-of-pocket costs directly related to selling and
transferring the domain names to the respondent. The complainant did not
accept these terms."Patron further
avers that Nabisco solicited the domain names from Patron "to build a case
against" Patron. Patron states also:"We felt that
this was a fair price to pay for our time and costs associated with selling
and transferring the names."Paragraph
7 re Ground C(ii) -- Patron avers:"The domain
names are not identical to the complainants trademarks; therefore this
is a mute [sic] comment."Patron alleges
that 13 of the domain names on Nabiscos Annex C list of 53 domain names
were not purchased by Patron, although they were "held" by Patron. Patron
alleges further:"The respondent
has not been contacted by any of the other companies listed in the other
40 names on this list. Therefore, the respondent feels that this list cannot
be used for a ground of complaint."Patron requests
that Patron "retain ownership of the domain names." Patron continues:"If the arbitrator
feels that some of the domain names are in conflict with the trademarks
of the complainant, the respondent is willing to transfer those names at
a reasonable expense. The expense should cover costs associated with transfer,
purchase and legal process/time associated with each domain."

5. Discussion
and FindingsParagraph
4.a. of the Policy directs that Nabisco must prove, with respect to each
domain name in issue, each of the following:(i) The domain
name in issue is identical or confusingly similar to the corresponding
Nabisco trademark, and(ii) Patron
has no rights or legitimate interests in respect of the domain name, and(iii) The
domain name has been registered and is being used in bad faith.Paragraph
4.b. of the Policy sets out four illustrative circumstances, which for
purposes of Paragraph 4(a)(iii) above shall be evidence of the registration
and use of a domain name in bad faith.Paragraph
4.c. of the Policy sets out three illustrative circumstances which, if
proved by respondent, shall demonstrate respondents rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii) above.a. Identity
or Confusing SimilarityNabisco urges
only "virtual" identity. It does not urge confusing similarity. Thus, Nabisco
must prove that the domain names in issue are "identical to its corresponding
trademarks.On its face,
each domain name in issue is for purposes of this dispute identical to
the corresponding Nabisco trademark. Patrons naked assertion that the
domain names are not identical to the corresponding trademarks "as confirmed
by the complainant" is not credible. Moreover, whether or not any of the
marks is a "famous" name is not relevant here, and Patrons unsupported
assertion that they are not "famous" names carries no weight.b. Rights
or Legitimate InterestsOn this record,
Patrons unsupported assertions are more than countered by the undisputed
facts and the circumstantial evidence. Patron levels no challenge to (1)
validity of any of the Nabisco trademarks, (2) Nabiscos rights in those
marks with respect to Nabisco goods, (3) the goodwill associated with those
marks, or (4) any fact averred by Nabisco as to the use of the marks and
total sales of goods under the marks. Patron does not deny Nabiscos assertion
that Patron has no active website under any of the domain names in issue.Patrons assertions
that (1) "most" of the domain names in issue "have meaning outside their
trademarks," and (2) "Bettercheddars.com" "could" represent a website for
a large cheese or cheddar producing firm in Wisconsin are no more than
wishful fantasizing. They can not undercut the undisputed facts or the
inferences compelled by the circumstantial evidence.Among the
additional relevant facts and circumstances are:(1) Patron
concededly "owns" 40 domain names. Nabiscos list of more than 50 domain
names associated with Patron, reveals many well-known terms used by well-known
global companies to denote their products and services -- ranging across
many categories of goods and services. Patrons asserted ownership of 40
well-known terms readily suggests more than coincidence in Patrons selection
of those domain names. Rather, it suggests a studied selection of domain
names for the purpose of profiting from activities other than maintaining
40 active websites for providing goods and services in commerce.(2) This record
supports the inference that it is highly unlikely that Patron could legitimately
use each of the 40 domain names it assertedly owns in providing goods and
services in commerce. On this record, none of the domain names in issue
is used in connection with an active website. Patron has adduced no evidence
that any of its other 40 domain name registrations is used in connection
with an active website. Patrons conduct in acquiring such domain names
suggests strongly that Patron intended and continues to intend to profit
from sales of Patrons rights in those domain names. Patrons offers in
its response (paragraphs 7 and 8) to "sell back" or "transfer" the domain
names to Nabisco "at the cost paid" or "at a reasonable expense" is entirely
consistent with this inference. But Patron cannot unilaterally anoint itself
as Nabiscos agent for the acquisition of domain names -- at any price.(3) If Patron
legitimately intended to use the domain names in issue here for any purpose
other than to sell them at a profit, Patron could easily have adduced evidence
in support of such. Patrons admitted ownership of 40 domain names of the
kind here in issue gives rise to an inference which calls on Patron to
adduce evidence to counter the inference.(4) In August
1999, Patron was willing to sell three domain name in issue to Nabisco
for US$6900. This willingness at this price is inconsistent with Patrons
having a legitimate interest in using any of the domain names as an active
website to provide goods and services in commerce. An active, legitimate
website should produce revenues far in excess of $2300.c. Bad FaithRegistration
and use of the domain names in issue in bad faith are matters of the appropriate
inferences to draw from circumstantial evidence. There is no evidence that
any domain name in issue has in fact been used in commerce in connection
with an active website by Patron. Indeed, Patron does not dispute Nabiscos
assertion that Patron "does not have an active website under any of the
complained of domain names." (Complaint, paragraph 9(B))Patrons real
purpose in acquiring the domain name in issue is revealed in the August
02, 1999 email from Hans Swildens, viz.:"To make a
profit on the work, we need to charge this amount [$2300] per name."The email
continues:"Since you
have three names you could purchase, the process can be duplicated and
we might be able to save some costs. Therefore a purchase price of $6,900
for three names sounds reasonable. If you accept these terms, I can have
a contract drafted and emailed to you."These are
not the proposals or prices of a proprietor of a commercial website who
is selling a commercial address of value intrinsic to the proprietor.Moreover,
in addition to the owners of trademarks mentioned in Nabiscos complaint,
other owners of trademarks "identical or virtually identical" to domain
names allegedly registered to Patron, or in 13 additional instances once
concededly "held" by Patron, include MCI, Merrill Lynch, Hershey Foods,
Kraft General Foods, Clorox, Colgate-Palmolive, Ralston Purina, and Revlon
(Annex C to the complaint).Manifestly,
it is fair to infer that Patrons real business is to acquire domain names
and to sell them for profit. Nabiscos exemplary list of domain names identified
with Patron (Annex C to the complaint) implies strongly that Patrons policy
and practice are to trade on the value of the marks it has registered as
domain names by way of selling the domain names to the long-time owners
of the marks or by otherwise interfering with the owners rights to use
their marks in commerce. Indeed, in addition to offering three of the domain
names in issue to Nabisco "to make a profit," Hans Swildens email of August
02, 1999 to Mrs. Gallagher of Nabisco, asserted "we sold two domains to
another company for $5,000 each to cover our costs and make it a profitable
transaction." Significantly, Mr. Swildens email of August 02, 1999, is
entirely silent with regard to any consideration for Patrons lost opportunity
to use the domain names as its own commercially active websites.It does not
avail Patron to aver that none of the owners of the 40 trademarks corresponding
to Patrons domain names has contacted Patron. This averment is silent
as to (1) the owners of the 13 domain names once "held by The Patron
Group but never purchased," and (2) whether Patron, or a Patron representative,
has initiated contacts with any of the owners of the other 40 domain names.
What ever the facts as to "contacts", the inference of bad faith is unaffected.Finally, Patron
does not deny Nabiscos allegation that Patron registered the domain names
in issue to prevent Nabisco from "reflecting the marks in corresponding
domain names." All that Patron can muster on this score is the contention
that, because the domain names in dispute and the corresponding trademarks
are not identical (in Patrons view), Nabiscos allegation is "mute [sic]."Thus, this
record reveals only evidence of Patrons intent to use and to profit from
its alleged registrations of at least 40 domain names simply and only by
sales at a profit to others.d. Paragraph
4.c. FactorsWith respect
to each domain name in issue, Patron has failed to prove any of the three
circumstances set out in Paragraph 4.c. of the Policy, viz.:(i) before
any notice to Patron of the dispute, Patrons use of or preparations to
use the domain name were in connection with a bona fide offering of goods
or services,(ii) Patron
or a related entity has been commonly known by the domain name, and(iii) Patron
is making legitimate noncommercial or fair use of the domain name, "without
intent for commercial gain to misleadingly divert consumers or to tarnish
the trademark or service mark at issue."

6. DecisionIn light of
the foregoing, the Panel decides that (a) the five domain names registered
by Patron and in issue here are identical to the five corresponding trademarks
of Nabisco, (b) Patron has no legitimate interests in respect of any of
the domain names, and (c) each domain name in issue has been registered
and is being used in bad faith by Patron.Accordingly,
the Panel requires that the registration of each of the domain names in
issue be transferred to Nabisco. The domain names are:"wheatthins.com","wheatsworth.com","bettercheddars.com","harvestcrisps.
com", and"milk-bone.com".Even if the
Panel had authority to grant the relief proposed by Patron, i.e. selling
back or transferring names to Nabisco in return for payment by Nabisco
to Patron, the Panel finds that Patron has made no showing to warrant any
such payment.

Decision
for Complainant

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